Trademarks 2013, Published by Getting the Deal Through, Chapter

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CONTENTS ® Trademarks 2013 Contributing editors Stuart J Sinder and Michelle Mancino Marsh Kenyon & Kenyon LLP Business development managers Alan Lee George Ingledew Robyn Horsefield Dan White Marketing manager Rachel Nurse Marketing assistants Megan Friedman Zosia Demkowicz Cady Atkinson Robin Synnot Admin assistants Parween Bains Sophie Hickey Marketing manager (subscriptions) Rachel Nurse Subscriptions@ GettingTheDealThrough.com Assistant editor Adam Myers Editorial assistant Lydia Gerges Senior production editor Jonathan Cowie Chief subeditor Jonathan Allen Senior subeditor Caroline Rawson Subeditor Davet Hyland Editor-in-chief Callum Campbell Publisher Richard Davey Trademarks 2013 Published by Law Business Research Ltd 87 Lancaster Road London, W11 1QQ, UK Tel: +44 20 7908 1188 Fax: +44 20 7229 6910 © Law Business Research Ltd 2012 No photocopying: copyright licences do not apply. ISSN 1745-4638 The information provided in this publication is general and may not apply in a specific situation. Legal advice should always be sought before taking any legal action based on the information provided. This information is not intended to create, nor does receipt of it constitute, a lawyer–client relationship. The publishers and authors accept no responsibility for any acts or omissions contained herein. Although the information provided is accurate as of September 2012, be advised that this is a developing area. Printed and distributed by Encompass Print Solutions Tel: 0844 2480 112 Law Business Research Overview Michelle Mancino Marsh Kenyon & Kenyon LLP 3 The Community Trademark Mathias Kleespies and Simone Schaefer Vossius & Partner 4 Angola Patricia Rodrigues Raul César Ferreira (Herd) SA 9 Argentina Julio César Villano Estudio Villano Attorneys at Law & IP Agents 13 Austria Peter Israiloff Barger, Piso & Partner 19 Bosnia and Herzegovina Tamara Bubalo Karanović & Nikolić Law Office 25 Brazil Philippe Bhering and Mina Kaway Bhering Advogados 30 British Virgin Islands Vanessa King and Feroza Kartick O’Neal Webster 38 Canada James Buchan and Jennifer McKay Gowling Lafleur Henderson LLP 41 Cape Verde Patricia Rodrigues Raul César Ferreira (Herd) SA 48 China Jay Sha Liu Shen & Associates 53 Colombia Juan Guillermo Moure, Juan Felipe Acosta and María Clara Calderón OlarteMoure 59 Denmark Johnny Petersen Delacour Dania 64 Ecuador Maria Rosa Fabara Vera Fabara & Guerrero Intellectual Property 70 El Salvador José Roberto Romero Romero Pineda & Asociados 77 France Aurélia Marie Cabinet Beau de Loménie 83 Germany Astrid Gérard Preu Bohlig & Partner 88 Greece Alkisti-Irene Malamis and Lina Galanopoulou Malamis & Associates 95 Honduras Ricardo Anibal Mejia M Bufete Mejia & Asociados 102 Hungary Péter Lukácsi SBGK Patent & Law Offices 108 India P V Balasubramaniam, D Ferdinand and K M Aasim Shehzad BFS Legal 113 Italy Fabrizio de Benedetti and Pier Luigi Roncaglia Società Italiana Brevetti (SIB) / Studio Legale SIB 119 Japan Yasufumi Shiroyama Anderson Mōri & Tomotsune 124 Kosovo Tamara Bubalo Karanović & Nikolić Law Office 129 Macao Patricia Rodrigues Raul César Ferreira (Herd) SA 134 Macedonia Tamara Bubalo Karanović & Nikolić Law Office 139 Malaysia Benjamin J Thompson, Haneeta Kaur Gill and Hannah Ariffin Thompson Associates 144 Mexico Sergio L Olivares Jr Olivares & Cia 151 Montenegro Tamara Bubalo Karanović & Nikolić Law Office 159 Mozambique Patricia Rodrigues Raul César Ferreira (Herd) SA 164 Netherlands Maarten Haak Hoogenraad & Haak, Advertising + IP Advocaten 168 Nigeria Tolushuwa Oyebokun Bloomfield Advocates & Solicitors 173 Norway Per A Martinsen Oslo Patentkontor AS 179 Peru Rosa María Kresalja Santos Duany & Kresalja Estudio de Abogados 185 Poland Anna Zakrocka and Bartek Kochlewski Patpol 192 Portugal Patricia Rodrigues Raul César Ferreira (Herd) SA 198 Puerto Rico Eugenio J Torres-Oyola and Maristella Collazo-Soto Ferraiuoli LLC 202 Romania Cosmin Vasile Zamfirescu Racot‚i Predoiu Attorneys at Law 208 Russia Elizaveta Dmitrieva, Yuriy Korchuganov and Olga Zakondyrina MGAP Attorneys at Law 214 São Tomé and Príncipe Patricia Rodrigues Raul César Ferreira (Herd) SA 219 Serbia Tamara Bubalo Karanović & Nikolić Law Office 223 Singapore Lam Chung Nian and Jeffrey Lim WongPartnership LLP 229 Slovenia Nina Drnovšek Law Office Drnovšek LLC 234 South Africa Debbie Marriott, Eugene Honey and Craig Shapiro Adams & Adams 240 Switzerland Brendan Bolli, Barbara Gehri and Felix Locher E Blum & Co AG 246 Taiwan Fali Lin and Michael Zuck Formosa Transnational, Attorneys at Law 252 Turkey Korcan Dericioglu Dericioglu & Yasar Law Office 258 United Kingdom Sarah Hadland, Isabel Davies, Holly Strube and Chloe Fernandez Boyes Turner 265 United States Michelle Mancino Marsh and Stuart J Sinder Kenyon & Kenyon LLP 272 Uruguay Martin Pittaluga and Fernanda Alonso Durán Pittaluga Abogados 279 Venezuela Maria Nebreda Hoet Pelaez Castillo & Duque 284 Vietnam Duong Thanh Long and Doan Phuong Thao Aliat Legal 290

Karanović & Nikolić KOSOVO Kosovo Tamara Bubalo Karanović & Nikolić 1 Ownership of marks Who may apply Any natural or legal person (or an undertaking that is not a legal person if it has the legal capacity to acquire rights and incur liabilities) may apply for the registration of a mark in Kosovo. Foreign parties in Kosovo enjoy the same rights regarding trademark protection as do domestic parties, should such rights derive from international treaties or the principle of reciprocity. However, the party claiming reciprocity has to prove its existence. Additionally, that foreign parties have to be represented in proceedings before the Kosovo Patent Office by a professional representative who has a BA degree in law and is registered in the appropriate register maintained by Patent Office, or by a domestic legal practitioner. 2 Scope of trademark What may and may not be protected and registered as a trademark Under the Kosovo Law on Trademarks, trademark protection shall be offered to any signs, particularly words, including personal names, designs, letters, numerals, audio marks, three-dimensional configurations, including the shape of goods or their wrapping or other packaging, including colours, or combinations of colours, that are capable of distinguishing the goods or services of one undertaking from those of another. However, a sign that consists exclusively of a shape shall not be protected as a trademark if such shape results from the nature of the concerned good itself, is necessary to obtain a technical result, or gives substantial value to the concerned good. At present the following cannot be registered: that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of the rendering of the services, or to have become common in the current language or are used con- goods nature, the shape of goods which is necessary to obtain a technical result, the shape which gives substantial value to the expected to deceive the public, in particular, as to the nature, of a geographical indication which identifies such wines or alco- gin or a geographical indication with effect in the territory of the Republic of Kosovo, if application for registration of the trademark has been submitted after application for registration of a denomination of origin or a geographical indication and it is in application request for registration of geographical indication, determined by respective legislation, basis of such denominations are registered for types of similar goods. 3 Common law trademarks Can trademark rights be established without registration For certain marks considered as famous marks, it is possible to establish trademark rights even without their registration. However, we do recommend that such marks are registered in Kosovo. 4 Registration time frame and cost How long does it typically take, and how much does it typically cost, to obtain a trademark registration The trademark registration procedure, where a mark is not found to be in opposition to any other previously registered trademark, usually takes somewhere from six to 12 months. However, please note that should there be a parallel court procedure initiated, the registration procedure may be extended by several years, since the registration procedure is suspended until a decision is rendered in the court proceedings. The average total cost for the registration proceedings is approximately €160. 5 Classification system What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed The classification system applicable in Kosovo is the International Classification of Goods and Services under the Nice Agreement, containing 34 classes of goods and 11 classes of services. www.gettingthedealthrough.com 129

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